What to do About All These Invalid Patents?

The recorder-of-deeds here in Boone County Missouri is pretty good at her job. Although there is an occasional error in the records, those errors are quickly remedied once found. The property records are regularly relied upon and their correctness is important to ensure smooth operation of the real property marketplace.

Prior to these decisions, the USPTO had been issuing patents under more lenient standards. See, e.g. State Street Bank (Fed. Cir. 1998). For its part, the USPTO has quickly modified its approach effectuate the new precedent that offers more stringent tests of patent eligibility and patentability. The result is not necessarily fewer issued patents or a lower grant rate, but instead perhaps a modification (narrowing) of claim scope.

These decisions are all naturally retroactive in that they apply fully to the aforementioned problematic claims found in already issued patents. However, the general approach thus far has been to leave those patents and their problematic claims on the patent rolls as if nothing had happened unless and until a third-party challenges their validity or the patentee abandons the protection. Q: Is this a problem? A: Yes.

355 thoughts on “What to do About All These Invalid Patents?”

That is quite a fanciful history, and it is bizarre to attribute blame to the USPTO. I think your history ignores SCOTUS refusing to take cert on subject matter cases, Congress passing laws, etc. Clearly the history is of judicial activism. The SCOTUS first OK’ing the information processing patents by refusing cert and then after deciding there was a problem (with no empirical evidence) deciding they would legislate and change the law.

Outrageous to act as if the SCOTUS suddenly discovered some 15 years later a problem. Or that the Congress hasn’t passed major legislation during this time.

I think this comment deserves a response from Dennis. The registry he references is very different then the real situation. The patents were not hidden. The PTO was following case law. The SCOTUS denied cert in 101 cases prior to Bilski. The fact is that this has more a character of the government encouraging people do something and then deciding it was not a good idea and taking away what they gave them. Yes at this point the Constitution should spring to mind.

For most people, the degree of contempt served out to an argument is in proportion to the weakness of the argument.

With anon though, it is the opposite. When all he can come up with is contempt, that’s all he’s got. The more contemptuous he is of the argument, the more boring he is, and the more he advertises to us that the argument does have merit.

I’m here only some of the time. And even then, I reply only when I think that my words might be of interest to other readers. That’s why, often, I don’t reply to anon, no matter how hard he tries to needle me into doing so.

David Stein: there is no test that can be consistently applied to patents to make this determination.

That’s because there’s fundamentally different classes of patent claims and no single “test” is going to apply in the exact same way to the patent claims at the margin of the absolute worst or the barely acceptable within any of the classes. In part that’s why we have different patent statutes: to help people focus on various issues with particular goals mind. The courts are presented with specific problems and they apply the statutes and explain their reasoning. As a result of this, and as a result of time passing and the types of claims being litigated changing over time and in response to the court cases, the law necessarily and inevitably evolves.

Patent law concerning a “new” technology should evolve as quickly as that technology evolves so that we are sure that we are rewarding the people who are developing the technology and not (1) speculators on what is going to become “widespread” or “demanded” only after it’s been gambled on; or (2) people who want to protect information itself, whether it’s limited to a certain conventional carrier or not. With respect to a pretty large portion of claims in the computer-implemented arts many people have zero confidence that (1) or (2) or both are being met by a large fraction of patents or pending applications. And until very recently it was pretty much the wild west for a long time. Face the basic fact: computers are old. Really, really old, from a patent prospective. Not quite as old as a ball point pen but way older than PacMan.

With respect to biotech, I’m pretty sure Prometheus put a giant permanent damper on (2), which is great and was a long time coming.

So you’re dissatisfied that you can’t easily evaluate every claim for eligibility based on the current case law. Okay. Then let someone who doesn’t find it so difficult help you do the analysis and you can modify the parts that you don’t like with some words of your own.

But it’s never going to be as simple as “use this word in your claim and you pass the eligibility test.” Never. Ever.

If you really believe that patent law should be rewritten such that people can protect, e.g., certain kinds of stored or transmitted information, with a patent claim then by all means step up and say so. Be bold, man! But if you don’t believe that, than you must recognize that people have tried and will continue to try to protect information and other ineligible subject matter with patent claims by futzing with the words in the claims. And a court is going to have to make the call. That’s what’s going on now.

Regardless of how difficult it is for you to understand how to apply the case law to claims you believe are at the the boundaries, you surely do understand that a claim to, e.g., a computer configured to store [useful non-obvious information] and display [useful non-obvious information] is ineligible subject matter, right? You don’t question that conclusion do you? Do you need to know whether I licensed that claim or not to determine whether it’s worthy of a patent? Is that your “test”?

Malcolm what if I’m Philips or GE and have found out how to make images of your innards that are sharper than those made up to now by me and my competitors. Instead of “Computer…..” I claim “CT Imaging Machine……configured to operate algorithm….X….to generate a CT image”.

You know, a bit like Diehr, but with the end product a sharp image rather than an injection molded part?

It’s data processing isn’t it? But might you not be persuaded to give me a patent for my invention?

Reverting to CT software, can we perhaps say that it makes a difference to patentability whether the image formed by the invention is of the vasculature inside your head or the buying preferences inside your head?

MM: “That’s because there’s fundamentally different classes of patent claims and no single “test” is going to apply in the exact same way to the patent claims at the margin of the absolute worst or the barely acceptable within any of the classes.”

Rubbish. There are fundamental attributes common to all patent claims that enable an appropriate test to be formulated. I know, not only because this is intuitively obvious, but because I have described one in the past.

We are all waiting for the promised ideas from Prof Crouch. In the meantime, below, commentators suggest that Germany has been exceptionally friendly to software patents, since the mid-1990’s. If this is true, perhaps one can explain it as a perception in Germany that what’s good for SAP is good for Germany, in that SAP needs a bigger pile of patents than Oracle’s got (or any of the other American competitors).

So is Germany now burdened with invalid software patents? After all, with Germany’s “twin track” system of litigating patents, the court trying infringement takes validity as a given. Apple v Samsung anybody? Does Google lobby against patents while SAP lobbies for them?

If software patent oh so friendly Germany doesn’t these days have a problem with invalid software patents, why is that?

When you get done with your dust-kicking and vap1d short script hawking, perhaps you want to delve into some actual facts (yes, this will require you to leave behind your “reality” and join us here on planet Earth).

The Link is nice. It shows the German State of B-W (traditionally strong in mech eng) boasting its IT innovation capability. Germany is a very litigious place. There is more than an order of magnitude more civil cases than in England. Under the EPC though, programs for computers are not eligible for patenting. It is that which frees up B-W (within litigation happy Germany) to innovate in software, and make B-W ever more prosperous.

Periodic technological disruptions, anon? Did you say “technological”? Are you telling me that, in Europe, the inventions in technology, that causes the disruption, ain’t patentable? If so, you are wrong. Remember, the EPC prohibition on patenting software is narrowly construed, to programs for computers, per se.

When are you ever going to grasp it, that not all new software embodies a patentable invention?

Night why is it that heart disease is more prevalent amongst speakers of English?

You see the most innovation in places where people invest in it. What gives people confidence so to invest? Earlier I posted a Link to the guy who financed early Bezos. It wasn’t patents that gave him his confidence.

What about Dyson, Nokia, Philips, Ferrari? I don’t know another country in Europe that is “similar” to Germany. One or more of its nine land border neighbour countries perhaps? Which ones though?

Or are you thinking Japan because its patent law is virtually identical to that of Germany. Are the Japanese, under the same patent law, more or less inventive than Germans? What do you know about that?

If you don’t know, then (just for a laugh) tell me instead what is it that you have been told to think, by the ridiculous news media you swallow?

Intel? Isn’t that a company that makes stuff? Is there any serious dispute, about whether manufacturers benefit from patents?

Amazon is not the only software company that didn’t need patents to get to giant size. Google, Microsoft too. One could go on and on.

I assume this was just a joke made by Dennis at the expense of the heel-diggers.

Billy and Company don’t want to “move forward”. They want to move backwards, all the way back to State Street Bank. Like Dylan’s Mr. Jones, this tiny entitled class of wealthy grifters just isn’t willing to accept that they are the no longer the Rulers of the Universe when it comes to patent law.

For example, I’m sure there’s still claims being filed (and granted) that a high school kid could tank under Prometheus in five seconds. And there’s some bttm-feeders out there who’ve deluded themselves so deeply that they believe that they just need to wait until Billy and Company get Congress to step in and “fix everything” so that j nk can be enforced again. Either that or we’re looking at a bunch of patent “experts” who can’t speak honestly about patent law if their lives depended on it. Really hard to imagine, I know …

It is past time for this bitter old prevaricating Bolshevik either to retire or do the honorable thing. “Honorable” as understood by disgraced Bushido warriors who were far better men than this piece of work.

Max, the big picture is that Google and other big corps don’t want patents. That is why they are dying. I know that all the little minds somehow think that their great rhetoric had something to do with this. It didn’t. It is the money of the lobbyist that is driving this. Not empirical evidence or reality. It is the power of the big corp.

I’m not so certain that Google and other big companies don’t want patents. If that were the case, why would they all be vigorously pursuing their own patents and buying others? I don’t know the size of Google’s portfolio, but Microsoft has > 47,000 patents in its portfolio, which is posted for public viewing. It seems more likely that what these big companies want is to prevent smaller or foreign entities (competitors) that are might be more inventive to secure patents in areas in which they already have partial patent coverage, ongoing business or see new opportunities but no patents.

While much of the recent discussion in the US has been on NPEs and PAEs, one might ask why that is the case? How often are the big companies the target of infringement actions by smaller entities (including universities)? What is the success rate in such actions, even when the evidence of infringement is incontrovertible? What are the legal tactics use to get perfectly legitimate claims of infringement disallowed? What are the costs to a small entity to assert and protect its patent rights? And, given the current points of discussion regarding recent court decisions, what is the likelihood that patents will be of any real value to a small entity, or to investors underwriting start-ups in the IT, biotech or other research driven fields? Who are the real trolls?

Those are good points. The problem is this has all become political and there is no such thing as an intelligent debate with real data anymore. Money buys reports that are nonsense. Money buys paid bloggers.

I agree that there are some mixed motivations going on with companies like Microsoft, but I think Google pretty clearly wants no patents. That is what they are lobbying for.

Just bizarre that Microsoft hired all these researchers because of patents and now the researchers say they don’t want patents. Guess what they will say when they are fired?

There is equally disconcerting and destabilizing anti-IP activity in the biotech field that will limit patent protection on most natural products. Ironically, this comes in the way of a directive from the USPTO to the Examiner Corps.

For those who think the world might be better off without IP protection on information technology, I would encourage them to think about what it will be like when there is no incentive to invest in new antibiotics or vaccines, both of which are desperately needed.

Perhaps Henry Kissinger was right in his recent editorial in the WSJ on the assembly of a new world order; he just didn’t look far enough into the future (or the past).

We live in interesting times. Now, we must hope that we do not become known to those in authority.

>>Oooh, so scary! “Give us the patents we want or all your >>children will die!”

You are such a tool. How about, gee, without patents we are going to lose a lot more jobs and the country won’t be on the edge of technological change anymore. How about the stagnant 1970’s.

Do you ever have any decent argument with anyone that disagrees with you? No you don’t. You do have Ned who supports you though. And according to Ned whenever you are bad it is because someone did something bad to you and they deserve it.

It is less that they do not want patents (per se) and more that they would rather compete on factors such as size and established market presence and avoid the not-owned-by-them patents and the possible disruptive, change-the-game aspects of such.

Living in Europe, I find that the patent system here always was confined to the useful arts, and still is, despite the best efforts of assiduous and zealous patent attorneys to push the boundaries of patentability beyond the ambit of the useful arts.

So I find unsurprising and unremarkable the present efforts of SCOTUS, to row back to where the boundary always was, and should be. There is no evidence that pushing restraints on trade (patent rights)out and beyond the useful arts helps the national economy.

It is tiresome here, to read constantly that the EPO’s boundary for patentability has not advanced beyond 19th century technology. Note the careful caution from both the EPO and SCOTUS, to define “technical”. They know that the definition will be out of date as soon as it is uttered. The joy of being in patents is that technical progress never stops, and to the public and the pols we can aver passionately and unwaveringly that it is our patents system that Speeds up this progress.

And information processing isn’t useful? Gee, we live in the information age because we can represent and manipulate information. Our entire society is structured based on our ability to manipulate represented information. But, it is not useful? ==><== Driving cars, diagnosing illness, detecting breast cancer, monitoring tax compliance, etc, are not useful?

I find it just so bizarre that in the information age these arguments can be made with the speaker being shamed.

And, please: 1) Europe follows us. We are the leaders. You take. And, 2) Europe has a shame eligibility test that is tied to what is currently hardware on a computer. Please.

It is dishonest of you to recite the two words “information processing” and then assert that Europe has only to hear that word to deny patentability. If we were to invest 1000 hours together looking at what happens at the EPO when “Information processing” patents get opposed, we would find that in many of them the Opponent is seen off with a flea in his ear! As to biotech, read Paul Cole to find out that Europe finds eligible much that the Prometheus Decision would render ineligible in the USA. As to “tax patents” Europe patents new games but says that methods for playing games and doing business are per se not eligible. Most reasonable people who do not have a vested interest are inclined to agree.

And as for “USA leads, ROW follows” that is indeed often the case, even now, and even in the law. But in the narrow field of patent law. I come from a First to File jurisdiction and I don’t agree.

As to the EPO on eligibility, the reason why recitation in Claim 1 of a computer is enough to confer eligibility is to divorce from eligibility the issues of novelty and obviousness. What’s so shameful about that, as an approach to 101, 2 and 3?

As to the article, it shows what I want it to show. It shows the enormous power of Google and how its PR machine operates.

Now Google doesn’t want patents. We have Hughs and Taranchula as the Google judges and likely will get another one soon. Chen is a Google judge, but appears to have a conscious, so he might turn out OK. As I predicted, the worst and most brutal judges are going to come from the technological and patent law illiterate.

Which is the one country that encourages the eligibility of information processing? And, I’ll give you a hint: it is the country that has the only substantive software industry in all of Europe. Yes, Germany. The Germans who believe that software should be eligible.

Seriously, I know you guys have probably won by the Google money, but it doesn’t make you right. And it doesn’t change reality. All it means is that bought off judges who don’t know the basics of patent law or science write words that they don’t understand.

But now you remind me about the passionate debate inside the Family of Europe, about design patents on body parts for automobiles. Germany very much in favour, for obvious reasons. Other countries against, for obvious reasons.

You can reasonably choose one or the other. Countries will choose according to their perceived national interest. There’s merit on both sides of the argument. But there isn’t, when it comes to debating whether to permit utility patents for pure business methods. That is the point of baulk, for reasonable minds free from vested interests.

>at what happens at the EPO when “Information >processing” patents get opposed,
The EPO is all about does it speed-up what we think should be hardware.

>Most reasonable people who do not have a vested >interest are inclined to agree.

Max, that is ridiculous. Most people that are educated understand that information processing is profoundly changing how business is conducted –not just this mere speed-up that the Google judges refer to.

What I will say about this whole thing is that it has become politicized so that it is almost impossible to trust any type of empirical evidence and it is almost impossible to have a real debate on these issues. Money in the US buys all now. That perhaps is the real tragedy. I if I am making the call, I’d say it doesn’t matter what reality is, but only what Google wants. And Google wants an end to patents. We see now the most ignorant activist judges at the Fed. Cir. that the US has ever seen in any circuit court for 100 years.

That is the real story here in the USA Max. Patents are now political. Debate is gone. Money trumps. Google has the money. We won’t have patents much longer.

Although, I do see that Google is happy to cut it at the technological test of the EPO. I see how Google sees that as cutting out all of its business so it would be happy at that.

So, yes, thinking out loud here, I think we are going to end up with a EPO type of test because of Google judges.

The biotech industry is in a crisis here. Not sure how this will play out. But, I am sure money is leaving. Not sure if another country will take the industry from us or if it will continue in some new odd form.

“…information processing is profoundly changing how business is conducted…”

but so what? How can that of itself be sufficient justification to extend patent protection beyond inventions in the useful arts? The point about patents are that they are a restraint on trade and so are justified only if the progress in the useful arts that they bring outweighs the restraint they cause. You can see it in chem and engineering, but not in software. SAP: was its growth enabled by patents?

>“…information processing is profoundly changing how >business is conducted…”

Well that is some indication that you are decent. The dirt bag MM will not even admit this.

I think if you agree with that then the burden is on you to tell us why you think these business method patents are different than say chemical patents. I don’t think they are.

Also, Max, if you are European then you know the history of Germany. You know that Germany made an initiative in the mid-1990’s for innovation that included strong patent protection. It worked. Germany went from near collapse to top of the heap. They have lots of problems still but the innovation revolution of the mid 1990’s has paid off unbelievably for the Germans. It was their second economic miracle. Patents were a cornerstone of the strategy.

What I find so deeply disturbing about posts like Max’s is the complete lack of evidence by which we are now burning our patent system down. We get little anecdotal evidence at best. The rest of it is sheer psychotic nonsense. It is just like an Alice decision. Judges look at something and without any external evidence (and not even being qualified to assess or understand the technology) declare it as no good.

I would challenge the judges in the recent Bingo decision to write 250 word essay on how a general purpose computer works. Bet they couldn’t do it. I’d bet they have no idea how any of this technology works. Probably could not even recognize Ohm’s law.

He very clearly does not understand that an anti-patent position is aligned with those very same elite owners of the Multi-National Corporations.

He very clearly does not understand that patents allow for game-changing disruptive innovation that can level the playing field and that will do far more than merely lift the minimum wage (and expressly here, the idea of raising the minimum wage is NOT a bad idea – but it most definitely is not the type of idea that excludes the true answer of making patents STRONGER – not weaker).

Maybe you can provide an example of software that is not a machine component.

Maybe you can provide an example of a software claim that looks anything like an enforceable claim to a “machine component” in the grown-up arts. You know what I’m talking about: a component that’s described in objective structural terms and not some handwavey functional b.s.

We all know you love to move the goalpost around and equate the “actual” invention with the functionally claimed hoohaw that appears in the typical computer-implemented claim. Unfortunately for you, Billy, most people aren’t as st 00pit and as easily confused as you are.

You are going on and on about Germany being the only country in Europe with a software industry. Is it only SAP that counts? What about the games industry? You go on and on about Germany favouring patents on software. What’s your source please.

Other sources also confirm the overwhelming main country is Germany. Did you have sources that say otherwise? Or are you just trying to do your usual “throw CRP at the wall and see what sticks”?

(and note this quote from the home page: “The software industry is characterized by periodic technological disruptions that pave the way for new arrivals.”

And if you had any sense about you, or had studied the innovation scholars you would easily see that patent systems promote and protect such disruptions, and new arrivals are protected from the behemoths because of patents. Even if that concept does not fit into your echo chamber views, you should try to understand (and gasp, perhaps even accept it).

I am not certain that it is only SAP. But, it is a good point that it would be interesting to study how much patents helped SAP.

there is also a bigger picture point. That Germany is the country most friendly to patents in Europe and Germany is by far the most innovative country in Euope with the best economy.

That applies to who else Max? Now if you want to be fair then it applies to S.Korea, USA, Japan, and yes the UK. So, all the drivers of innovation in the world have (did have) strong patent systems.

Anyway….too busy for this nonsense. Nothing I say matters as it comes down to Obama taking $25 million for the next Fed. Cir. appointment being a Google Judge and they will say what is what. And nothing I say will hold up to $25 million.

Also Max, I was involved a little bit in raising money for start-ups in Munich. So, I do have some sense of Germany and the environment.

And, ——PLEASE TRY TO BE REAL—–Germany is the number one economy in Europe!!!!!!!!!!!!!!!!!!!!!!!!

And MAX ——– I WAS THERE AT THE TIME——Germany went from in the dumps to on the top. How did they do that? Well, Max they did that by expressly encouraging innovation. They said we are going to innovate to get out of this mess. And, one way they did that was with patents!!!!!!!!!!

Man, it is just filthy blogging here. There is no reality. No decency. Just filth bags saying and lying in anyway they can to make a point.

And, the worst part of it is that the Prof. here appears to be in their camp.

I’m still mystified by your mid 1990’s point about Germany, that this is when Germany first got innovation. Perhaps you allude to the German notion that an enquiry as to novelty should not be part of the eligibility enquiry, with the consequence that a claim to say “A Computer.” is eligible. Patent friendly or not?

Max, what? You don’t know that Germany was in a transition period in the mid 1990’s? That they considered massive employment restructuring to compete. That instead they decided that innovation was the way out of their economic problems. And that they did everything possible to encourage innovation.

MaxDrei has always been a shill. Count the number of horse carcasses next to the well of wisdom that I have led him to. He is “all about” having a mind open to learning – as long as what is being learned fits his dogma. Anything beyond that, and all of a sudden, MaxDrei cannot grasp what is being said. 80 cycles of 6-month experience has cemented in a world view that is the very opposite of a mind open to learning.

Night your comments on Germany bear no relation to the reality I know. Who sold you this nonsense about revolutions in the mid-1990’s. It is drivel. I suppose you refer to Gerhard Schroeder’s “Agenda 2010″ which achieved nothing else but incremental change in labour flexibility and cost, even while it was spun to something more, to suit various political objectives.

The notion that Germany’s technologists suddenly turned innovative in the mid 1990’s is ridiculous. Or are you referring to Germany’s hitherto deeply conservative banking sector? Now there, I grant you, led on by London and New York, German bankers did become innovative, in thinking about how to increase their fee income. But what’s that got to do with Agenda 2010, and what’s it got to do with patents?

Ned, I’m not going to spend a lot of time proving to you what is reality. Go and read about Germany. I was there. I worked there for a German company at that time. I read the papers. I know what happened. I know now something like 40% of Germans are employed by new innovations spawned since the mid 1990’s.

The Germans in the mid 1990’s said they needed a second economic miracle. That was what they all were saying. And they turned to innovation. They won. You lost.

One more thing Max. The question with SAP is probably did the patent system in Germany create an environment where investors and inventors felt if they invented something that they could protect it with patents.

I was there. I was writing software in Germany. I knew people starting companies in Munich and used to have beers with them.

That is the bigger question that anyone that actually has been in innovation and company formation knows is the key.

And I know very little about the specifics of SAP, but I do know that that bigger environment is what counts. That is what creates innovation and drives people and money.

I understand that Google has a different situation. They have all the money they could ever need, but think about it Max.

if you are a real person think….really think about Google.

Anyone that knows about innovation knows that Google has a massive problem. They are a corporation and are not good at innovation. They bought Android you know. And they have stagnated. They are fat and rich with very little to protect them. They know it. They don’t want patents.

I would myself cite Adolf’s Employee Inventor Law, which carries on even today and imposes an obligation on employers to file for patent rights on every employee Invention (unless the employee can have it or unless it’s a trade secret). Now that really does cultivate an environment favourable to innovation.

Horrible nonsense from you. The history of the German second miracle is well known. The fact that it hinged on innovation and patents is well known. The fact that a huge percentage of German workers are now working on products from the fruits of this intensive innovation effort is well-known.

Look at how thick MaxDrei is – he presents a link implicitly tied to the strength of a patent system and insists on arguing for an anti-patent position.

No critical thinking there.

Give him his "Adolf’s Employee Inventor Law" but make the outcome equivalent to giving an employee a nice shiny penny for their thoughts and THINK (that's addressed to MaxDrei, not you) about how much motivation such a law would carry.

Night you write that patents are to stop people in India copying the SAP code. I don’t see that as an argument for software patents with claims that are functional at the point of novelty. They impede competition rather than stimulate it.

Patent-friendly Germany. Does it allow functional language at the point of software novelty? If not, it must be some other reason that explains Germany’s success at technological innovation.

That is quite a fanciful history, and it is bizarre to attribute blame to the USPTO. I think your history ignores SCOTUS refusing to take cert on subject matter cases, Congress passing laws, etc. Clearly the history is of judicial activism. The SCOTUS first OK’ing the information processing patents by refusing cert and then after deciding there was a problem (with no empirical evidence) deciding they would legislate and change the law.

Outrageous to act as if the SCOTUS suddenly discovered some 15 years later a problem. Or that the Congress hasn’t passed major legislation during this time.

Clearly the history should be one of the judiciary changing the law by themselves and thus confusing everyone and causing everyone a lot of trouble. Probably what about $10 to $100 billion dollars in trouble.

So how does one “objectively” determine whether some information or some abstract labeling applied to an old (or undescribed) physical structure or information processing method deserves patent protection or not?

David Stein: there is no test that can be consistently applied to patents to make this determination.

That’s because there’s fundamentally different classes of patent claims and no single “test” is going to apply in the exact same way to the patent claims at the margin of the absolute worst or the barely acceptable within any of the classes. In part that’s why we have different patent statutes: to help people focus on various issues with particular goals mind. The courts are presented with specific problems and they apply the statutes and explain their reasoning. As a result of this, and as a result of time passing and the types of claims being litigated changing over time and in response to the court cases, the law necessarily and inevitably evolves.

Patent law concerning a “new” technology should evolve as quickly as that technology evolves so that we are sure that we are rewarding the people who are developing the technology and not (1) speculators on what is going to become “widespread” or “demanded” only after it’s been gambled on; or (2) people who want to protect information itself, whether it’s limited to a certain conventional carrier or not. With respect to a pretty large portion of claims in the computer-implemented arts many people have zero confidence that (1) or (2) or both are being met by a large fraction of patents or pending applications. And until very recently it was pretty much the wild west for a long time. Face the basic fact: computers are old. Really, really old, from a patent prospective. Not quite as old as a ball point pen but way older than PacMan.

With respect to biotech, I’m pretty sure Prometheus put a giant permanent damper on (2), which is great and was a long time coming.

So you’re dissatisfied that you can’t easily evaluate every claim for eligibility based on the current case law. Okay. Then let someone who doesn’t find it so difficult help you do the analysis and you can modify the parts that you don’t like with some words of your own.

But it’s never going to be as simple as “use this word in your claim and you pass the eligibility test.” Never. Ever.

If you really believe that patent law should be rewritten such that people can protect, e.g., certain kinds of stored or transmitted information, with a patent claim then by all means step up and say so. Be bold, man! But if you don’t believe that, than you must recognize that people have tried and will continue to try to protect information and other ineligible subject matter with patent claims by futzing with the words in the claims. And a court is going to have to make the call. That’s what’s going on now.

Regardless of how difficult it is for you to understand how to apply the case law to claims you believe are at the the boundaries, you surely do understand that a claim to, e.g., a computer configured to store [useful non-obvious information] and display [useful non-obvious information] is ineligible subject matter, right? You don’t question that conclusion do you? Do you need to know whether I licensed that claim or not to determine whether it’s worthy of a patent? Is that your “test”?

MM: “That’s because there’s fundamentally different classes of patent claims and no single “test” is going to apply in the exact same way to the patent claims at the margin of the absolute worst or the barely acceptable within any of the classes.”

Rubbish. There are fundamental attributes common to all patent claims that enable an appropriate test to be formulated. I know, not only because this is intuitively obvious, but because I have described one in the past.

Why is the “problem” created by the recent caselaw in the above list any different than the garden variety patent that should have never beeng granted due to the prior art? There are tens of thousands of this type of presumptively valid, but clearly invalid, patents, many from well-known companies who continue to hypocritically complain about patent quality. I try to keep an open mind, but I cannot imagine anything that can be done to deal with issued patents that are clearly invalid, whether based on the recent 101 caselaw or garden variety anticipation or obviousness (apart from, of course, expensive third party challenges).

No, that was not my point at all. All I said was that I can’t see any reason why patents which are now invalid in light of one or more of the cases mentioned in Dennis’s post should be addressed in some new fashion (apart from the usual validity challenges allowed under current law). Dennis is a bright guy, however, so he very well may have some ideas which make sense. Still, invalid patents issue every week–patents which would have been invalid under the caselaw from 20 years ago. What has changed to call for a purge (or whatever Dennis is suggesting)?

Thanks for the clarification – if I understand you correctly then, you are sounding more in the Lemley “examination is not perfect and we should not expect it to be perfect” view, and wondering why the drumbeat of “patents are bad” is drummed so loudly. Did I get that right?

This comment seems like a continuation of Paul’s comment #9 below about the much larger problem is a world full of patents that couldn’t stand up to existing PA. I agree with both.

anon asks whether there’s a point to examination at all, but the problem is not in examination per se, but searching the PA and who should be doing it.

Reality #1 is that a patent primarily certifies that the application passed muster as to determinations of patentable subject matter (101) and sufficient clarity in describing what is patented (112) – and the so-called “assumption of validity” is, and should be, very strong with respect to these two determinations.

Reality #2 is that as far as novelty/non-obviousness goes, as a practical matter, a patent certifies nov/non-obv only so far as whatever prior art is listed in the examination/re-examination/supp-examination/whatever-examination documents. Any assumption of nov/non-obv over the entire universe of prior art is so weak as to be non-existent. As you point out, this is the real Achilles heel of the system: a huge number of patents are built on PA-sand.

For years I have advocated that the problem of infinite PA and limited PTO time/search capabilities should be resolved by putting the search responsibility entirely in the hands of the applicant. The PTO should not be searching at all – nil, zero, zilch, nein, nicht, nada. We could lay off 1/3 of the examiners and speed up the process 2x. But not to worry, 6 – the laid-off examiners would be fully employed as searchers in the private sector.

For his filing fee, the applicant should be allowed to submit the 50 most relevant references, with optional, preemptive comments. Only those disclosed references should be subject to the PTO’s analysis and 102/103 rejections. If the claims are so complex or numerous that they can’t be fairly examined on only 50 references, the application should be broken down into connected, simultaneously-filed applications each with discrete claim sets and associated references. Infringement would be assessed as to each component application separately.

Any patent that issues would certify only that the invention is nov/non-obv over the art of record. The assumption of validity as to nov/non-obv would be very strong with respect to the art of record, but extend not an inch beyond.

There would be no assumption that the applicant has provided everything his has. The whole idea of inequitable conduct by w/holding references should be scrapped. If the applicant wants to hide references, let him. I mean, what idjit would invest money developing a product or process knowing that his patent is worthless because the hidden references are beyond the scope of the patent’s protection? The sanctions for withholding references would be built into the questionable conduct itself. As it is, the mythical, plenary assumption of validity is really an inducement to withhold PA.

IOW, this approach would allow the applicant himself to determine the strength of his own patent. If the applicant submits no PA, then the patent would certify only that there is patentable subject matter and a legally adequate disclosure. Applicant’s own due diligence in searching the PA should determine the strength of the nov/non-obv assumption.

The examination should be conducted in two distinct parts. First, the 101/112 analysis should be completed so that these problems can be taken off the table before the applicant has to bear the expense of a comprehensive search. This should take a month or two. Once the examiner certifies that the application complies w/ 101/112 the applicant would have a year to submit its PA and the 102/103 analysis would begin. If applicant wanted to appeal 101/112 rejections, he could file his notice of appeal and either prosecute the appeal immediately or wait until the 102/103 examination has been completed.

Without having reviewed the statutes/regs closely, my guess it that this sort of system could be implemented very easily. Basically, it would require insertion of “art of record” in a few places that refer to or define nov/non-obv.

I’m still beating this dead horse, but mostly to keep the flies and moonbeam-nay-sayers off of it ’til it gets up on its feet and runs.

Note that this isn’t radically different from the classic “accelerated” exam scheme, where Applicants needed to provide the closest prior art and explain why their claims were patentable over that art.

It’s refreshing to see an attempt at a serious discussion of the problem.

As someone who works in the search space (and holds and applies for patents on the underlying technology and is thus concerned about drafting claims, post Alice, post Bilski, post Bingo Gaming Software), I’d to provide an inventor’s/applicant’s/cleint’s views on Reality 1 and Reality 2.

the problem is not in examination per se, but searching the PA and who should be doing it.

Agreed. But, i would argue that the problem is with search itself and most of the methods of searching large corpora, such as the world’s patent literature and scientific, technical and medical literature do not work particularly well on this type of content. The majority of contemporary search methods operate at level of strings (tokens), but we need to work at the level of concepts (what the strings mean, in a given context).

Meaning changes, over time and across disciplines. That is particularly the case for technical terminologies, especially in rapidly developing areas in which new terms are created, but frequently lack a concrete definition. Many technical terms also have synonyms and may be polysemous (many different meanings). Failure to take this into consideration when conducting a thorough search results in both false positives and false negatives. While the former can be filtered out by experts, retrieval of missed documents is far less easy without extensive training (machine and human) and leads to a extended/refined searches. The time required to conduct such searches increases exponentially with the size of the search space.

I’m certain that most readers of this blog know that search is an active area of research for both the commercial and non-commercial sectors and the market for improved products is worth billions of dollars. An enhanced search method that would successfully return content that is semantically and contextually correct in any given setting would be game-changing in virtually every sector of the world economy. But, if it is based on an abstraction of language theory that is reduced to a set of algorithms (business rules) that run on general purpose computers and analyze information, how would one protect such an invention? Where does one draw the non-obvious line now and in the future? Would such a system or method constitute a ‘building block of scientific inquiry” and be deemed ineligible subject material? Is the software simply mimicking well known mental steps that could be worked out with pen and paper? After all, we were searching for and finding information in documents long before the general purpose computer was invented.

How would one write claims for a novel software product that clearly understands exactly what a human wants to retrieve, searches all of the available content and returns all of the contextually relevant information, including all the content in which synonyms, polysemes and other linguistic ambiguities have been resolved? Some legal certainty would be nice.

As for Reality 2, independent review by examiners who are true subject matter experts remains essential to avoid potential conflicts of interest. While I understand that the the question about examiners’ expertise frequently comes into question, so does the expertise of peer reviewers of scientific and technical literature, and of grant applications. It is always easier to blame the other party for failing to see the brilliance of one’s own work. But the question of thoroughness remains. Current limitations on the amount of time that an examiner can review an application, especially a complex one are probably unrealistic. I cannot imagine being able to give a 100-125 page application with >50 claims a careful and thorough review in less that 2-3 days, especially if I must also search for prior art.

Think if each patent agent/attorney were given less than 20 hrs of time to draft a patent application and to file it (or better yet, set a statutory limit on the fee that could be charged to draft a patent application). While cost considerations are important to all parties involved, so too is work quality. The idea of a staged review of an application is interesting idea, but how to implement such a change in rules in accordance with existing law also neds to be considered, as has been pointed out.

Thanks for a thoughtful and insightful comment on this thread. It was refreshing to be able to lower my flame-retardant shield, even if only for a moment…

Quick question for you re: “active area of research for both the commercial and non-commercial sectors and the market for improved products is worth billions of dollars. An enhanced search method that would successfully return content that is semantically and contextually correct in any given setting would be game-changing in virtually every sector of the world economy”

Yes, patents are the appropriate form of IP protection. Copyright can protect data and code (along with other forms of access control, ranging from licensing agreements to obfuscation). But copyright only protects the form of expression. Changes in the way one expresses the basic instructions that comprise software (e.g., using different computer languages, different libraries of functions, etc. to write the same or similar software) could result in a loss of protection. This would be true even if the underlying methods are novel and non-obvious solutions to meaningful problems in the field of information technology. Beyond search, there are numerous problems to solve that do not necessarily require special purpose hardware. These include problems in pattern matching, data compression, visualization, etc. many of which can be accomplished with general purpose computers (which can range from lap-top or mobile device to a super-computer). Any or all of these applications could be deemed ineligible subject material.

Perhaps part of the problem today is that “general purpose computers” are essentially configurable into any number of possible virtual machines that can be applied to an unlimted variety of tasks. They are basically “blank slates”. It is the software (e.g, the instruction sets) that converts the general purpose computer into a task specific machine, that takes some form of input (data, information) and transforms into something else (transformed data, transformed information) that is useful, and frequently novel, non-obvious and unanticipated. The problem is to the unsophisticated observer, this is not readily apparent. They can look at a sewing machine and a hay baler and see the difference, even through both use the same basic mechanical components (gears, levers, motors, mechanical fingers to tie knots, etc.) to accomplish very different tasks.

But, when it comes to software, they cannot see that the underlying data structures, methods of transforming and analyzing the data and returning some form of useful output to the user seems so unremarkable and obvious because all of it runs on a general purpose computer. The actual machines that are created by software are virtual and the products that are created by transforming input data into output data, information, or knowledge are, more often than not, exist in electronic rather than physical form.

Despite the fact that the information age began more than a half century ago, it would seem that our claim language concepts of eligible subject material remain rooted in the industrial era. this needs to change, for the sake of the our economy, and the playing field needs to be leveled, but that is a point for another thread in the future.

One caveat though – you use the term of art “virtual machine,” and many anti-software folk around here will likely see the word “virtual” and glom onto the thinking that the machine is not real -where in fact the machine so created is very much real.

They will not understand (or even try to understand) what you mean by electronic form as you attempt to discuss (again a term of art) in comparison to physical form.

Are you familiar with In re Alappat? – a case which is in a line of cases that also discusses the error of assuming no change in machine just because the (very real) changes are at a level not seen by the human eye.

Why is the “problem” created by the recent caselaw in the above list any different than the garden variety patent that should have never beeng granted due to the prior art?

If a body of patent law experts is given a typical patent claim (and a specification to verify its interpretation) and a set of references, the experts should largely agree on whether or not the references teach the claimed invention. And when asked why, the experts should all provide largely the same analysis, with a correspondence between claim terms and passages in the references.

If the same body of patent law experts is given a typical patent claim and asked whether it is patent-eligible under 35 USC 101, there will be very little consensus. Some of them will say “no because abstract,” and others will say “yes because not abstract.” And the conversation will end there.

David, I agree. However, I believe that Dennis was referring to the issue of what to do about issued patents that are clearly invalid in light of recent caselaw. Also, his post was not limited to 101 issues, but rather included 112 and 103 problems. But I see issued U.S. patents on a weekly basis which would have been invalid under caselaw from 20 years ago. The point I was trying to make is that I do no believe there is anything extraordinary about recent caselaw which would necessitate taking some sort of action with respect to patents which are now invalid in view of those decisions.

The problem is that we have no reliable way of measuring “good” examination vs. “bad” examination – because SCOTUS’s decisions have eroded any subjective basis for making such determinations.

It’s no longer fair, or even possible, to explain why an examiner’s rationale about allowing or not allowing a claim under 101 / 112 / 102 / 103 was correct or incorrect. All you can say is that a SPE, PTAB, or federal court agreed or disagreed with the examiner.

Of course, this is the obvious result of turning all of patent law into a “smell test.”

In 2008, In re Bilski vastly expanded the scope of the 101 question beyond basic utility to the machine-or-transformation test; and in 2010, Bilski v. Kappos replaced MOT with unexplained philosophizing about the term “abstract.”

And in 2014, Alice, by endorsing the “it’s basically this thing” and “disregard the aspects of the claim that we don’t want to deal with,” the Court totally divorced the patent eligibility question from the claim language.

So the “smell test,” in its full, florid malignancy, is only two months old. The USPTO still has no idea what to tell its examiners, and is desperately seeking some guidance other than “do whatever you want” (and isn’t really getting any).

The point I was trying to make is that I do no believe there is anything extraordinary about recent caselaw which would necessitate taking some sort of action with respect to patents which are now invalid in view of those decisions.

Sure, I agree with you. Nothing in recent case law has altered the fundamental mechanics of enforcement: indisputably valid patents will not be contested, but will be licensed or designed-around; indisputably invalid patents will not be licensed, and probably not even litigated; and borderline patents will be litigated (and/or licensed by more risk-averse parties).

The AIPLA might also consider disbanding its very large committee dedicated to being a cheerleader for business method patents. It is time for this old and prestigious organization to recognize the errors of its recent past and stop pushing for patents on nonstatutory subject matter.

Land patents and equivalents are great examples of what everyone wishes 35 USC patents could be. Objective. Centralized. Following a shared lexicography. Testable.

Are there problems and disputes? Sure. More often than not driven by mistakes, not uncertainty. And the types of issues in any single dispute are not unbounded.

35 USC patents share almost none of those things.

Without even getting into the issues of challenging the land patent, if land patents were written like 35 USC patents then:
1. Every land owner would describe his or her land without reference to or knowledge of any of the surrounding properties.
2. Every drafter would err on overstating their property interest and “negotiating” backward.
3. Every drafter would pick his or her own coordinate system.
4. The patents drafted in one locality might also apply anywhere else.
5. Users of adjacent lands aren’t given any direct notice of claims in the land patent.
6. Identifying the owner of any particular tract of land would be impossible.
7. No official surveys would required to file for a land patent.
8. Previous land owners would be presumed trespassers in the face of a land owner.
9. Land patent owners could knowingly wait years until the “trespassers” had built upon the land and sue.

I picked trespass on purpose–the legal rule that gives a land owner the right to exclude others. Also, like 35 USC patents, land patents don’t often give the right do anything in particular, which are often restricted by other laws, rules, ordinances, zoning, etc. notwithstanding ownership rights.

Patents do not give one the positive “right” to make, use, or sell anything, only the “negative” right to exclude others from doing so.

Rights to land give BOTH the right to exclude others from the land and the right to enjoy the land.

Many different patents owned by many different parties can apply to the same product. For example, you can patent a better windshield wiper, but that does not convey to you the right to sell windshield wipers if another patent owner has the patent to the windshield wiper. He can exclude you from selling a wiper incorporating your improvement and you have the right to exclude him from incorporating your improvement into his wiper.

This has no easy analogy. It would be as if land could have overlapping “ownership” but whose rights are ONLY “exclusionary”.

You can’t walk or build here, without my permission… and by the way I can’t walk or build here without his permission… etc.

Rights to land give BOTH the right to exclude others from the land and the right to enjoy the land.

That’s not necessarily true. Land patents is the grant of an ownership interest in the land. They might include unfettered right to use the land in any way the owner chooses, but that’s not really the case. I haven’t done an analysis, but I’d say few actually do that.

They DO, however, give the owner the right to stop others from using the land.

Every land owner would describe his or her land without reference to or knowledge of any of the surrounding properties
Hardly. Most patents specifications employ terms of art.

Every drafter would err on overstating their property interest and “negotiating” backward.
As an attorney, are you acting in the best interest of your client by intentionally understating their property interest?

Every drafter would pick his or her own coordinate system.
We are stuck with the English language — and all its imperfections in describing technology. Deal with it.

The patents drafted in one locality might also apply anywhere else.
???

Users of adjacent lands aren’t given any direct notice of claims in the land patent.
Why would they care about lands that aren’t their own?

Identifying the owner of any particular tract of land would be impossible.
Only for the incompetent. I live in a house and I don’t know who, precisely, is the owner of an adjacent lot. It really doesn’t matter … again, not my land.

No official surveys would required to file for a land patent
Its called a patent application.

Previous land owners would be presumed trespassers in the face of a land owner
If the land is entirely new then there wouldn’t be any previous land owners.

Land patent owners could knowingly wait years until the “trespassers” had built upon the land and sue
The failure of patent owners to be omnipresent … let’s hold it against them.

We work in a crazy field.
I’m not sure you should be included as part of the “[w]e.”

I hope to live in a nation where a patent is not judged by the gist/ classification/ ge ne ral field of invention, but by the content of the claims and the clear and distinct delimitation of the broad monopoly sought.

I hope to live in a nation where all claims are treated equally, without gist/ class/ superficial profiling.

I hope to live in a nation where granted claims are presumed valid until proven invalid according to the appropriate burden of proof …

If correct, principles applied in the profound arenas, can only ever function as exemplars and role models for their application to the mundane arenas, at least in the minds of those who are rational and who actually uphold those principles with integrity and conviction.

As my “analogy” of the application of justice to the mundane with its application to the profound does not in any way sully the profound, so too my reference to rationality, integrity, and conviction are not in any way disparaging of your person.

i.e. To the extent you interpret my meaning correctly you will not be insulted.

Furthermore, the nature of patents is that they must be evaluated on a case by case basis. Even if a ruling of invalidity in any one case was coherent and made sense and was correct, how does that get how does that get translated to the next case.

Examiners sometimes allege that since a claim includes the word “wherein” all the language following that word is optional and therefore ignorable from an examination standpoint strictly because of the word “wherein” and the fact that the MPEP alleges that the word wherein raises a question regarding an optional nature.

Would you like to have all patents reexamined by such examiners extrapolating one sentence out of context from Alice or Bilski?

Prof. Crouch’s bias is seeping through again. Notice how the conversation on the previous thread ended abruptly when I pointed out the historical fact that the Act of 1952 ended the permission from Congress to the Courts to set the definition of the word “invention”, and here the droll insertion of “patent common law” was inserted in this new thread?

I “get” that there are many that prefer the efficiency of the common law tool. But a professor of law at least should recognize the distinctions of properly using that tool in the patent law context – both globally (the distinction between common law and statutory law regimes) and specifically in the context of 101, where Congress took deliberate actions in response to an activist Court.

The fact that this fact is NOT acknowledged – and is perpetually obfuscated only shows the strength of the biases in play.

The 1952 Act created and separated from what became section 101 the new section 103.

The 1952 Act ENDED the Court’s common law ability to set the definition of the word “invention” directly because the hoped for coalescence of the meaning of that word never happened – and the activist court was engaging in nose of wax treatment of invention, inventive concept, patentable novelty and a host of like phrases

It is more than just a little pedantic to say “Gee, the words are still the same” while ignoring the rest of history, the congressional record and the writings of Frederico and Rich.

I thought the focus of this discussion in this thread was on the doctrine of subject matter eligibility and whether the 1952 Act was designed to block the Supreme Court from further defining and limiting eligibility beyond interpreting the words in the statute.

Although my preference would be for the court to follow the statute rather than simply creating new common law doctrines from whole cloth, my point from the prior post is simply that it is a stretch to see the 1952 Act as blocking the Supreme Court in this way. In any event, we know that the Supreme Court does has not interpreted the statute in that way with regards to patent eligibility. (As you correctly note, it is a different story when we move to novelty and obviousness).

I also think that you may have mis-interpreted my reference in the post to the court creating common law. Although we have a glorious common law history, courts today do not want to be seen as creating common law. That would be activism and not simply calling balls and strikes. I don’t believe that the Supreme Court has ever identified its eligibility jurisprudence as “common law” and rather has the usual approach of tying itself to the statute (Section 101) without even considering the actual language of the statute. But the exceptions to patentability are not an interpretation of the statute and I was simply calling them what they are.

Dennis, and unstated assumption regarding the so-called exceptions are that they are constitutional dimensions that limit Congress. Time and again the Supreme Court has said they are interpreting §101 to be consistent with these exceptions.

However, in the recent cases involving Bilski and Alice, we are not truly dealing in abstract subject matter because the claim includes whole lot of otherwise eligible subject matter. In these mixed subject matter cases that included the statutory and the nonstatutory, the mode of analysis must be to determine whether the statutory is otherwise patentable because it is novel and nonobvious. If not, then the patent essentially covers the nonstatutory. Call that abstract if you want, but technically what is going on here is the analysis of Hotel Security.

Well, let me put it this way. If you describe [the claimed invention] to a second-year college class in engineering and said here’s – here’s my idea, now you go home and you program over this weekend, my guess is that that would be fairly easy to program.

That is because Professor Crouch is dealing in legal reality for those interested in honest, competent, legal counseling on the law as mandated by the U.S. Supreme Court, not pandering to individual legal fantasies.

We all know why, Billy: it’s because you’re a path 0l0gicall l y in g t0 0l with a severe personality disorder which causes you to project your failings onto others.

“grifter”-watcher

And we all know why Billy is disturbed by anybody who would dare to keep track of how the patent system is abused by btt0m fee ding s cu mbags, and how self-proclaimed “experts” like Billy do everything they can to pretend those s cu mbags don’t exist.

You represent a truly tiny minority of entitled, well-heeled di psh its, Billy. We’ve been watching you and your cohorts for years now. You’re still playing the same game and wondering why you’re losing. Well, there’s an easy answer for that. Let me know if you need me to spell it out for you, di psht.

The above-noted claim validity threats from changes in patent law from Sup. Ct. decisions pales in comparison to the number of patent claims for which the application examiner, with limited search time and resources, has simply missed the most relevant patent or publication prior art. This is amply demonstrated from reexamination and IPR statistics where suit-threatened petitioners have typically spent thousands of dollars doing a really thorough prior art search and found much closer prior art.
The above comment about using reissues is a good one, providing the PTO finally gives them the priority they are supposed to have. Another [largely neglected so far] opportunity to repair and/or re-issue claims is the new AIA ex parte Supplimental Examination system.

P.S. Also available are completely ex parte reexaminations requested by the patent owner itself, with unlimited amended and added claims. They are not examined by the original examiners, they are examined in the centralized reexamination unit. Now that that PTO unit has worked off much of its backlog of [no longer available] inter partes examinations it should be able to move faster on ex parte reexaminations.

Remember that “mind willing to learn” CRP you used to spew? How much have you actually learned? (and no, that continual reinforcement of that set of 6-months experience of belieb system you have does not count as learning).

The archives already have my comments on the case – the point here is that Ned refuses to understand the case because it cuts against his dogma. The point is to have Ned apply his “vast case law skills” in realizing exactly why this case cuts against his dogma.

Meanwhile, what “lives in the Supreme Court” is hardly anything worth celebrating – or did you somehow miss that too in your reading here?

These sorts of problems could conceivably be remedied through reissue. Almost any amendment to fix such claims would be narrowing, so the reissue application could be filed at any point during the patent term.

That being the case, I don’t know how large of a problem this is. Except for the judicial body that explicitly caused the problem of their own accord. It should be a rather large problem for them, as they obviously cannot be trusted with this whole patent law thing. As the USSC noted in a recent opinion or argument, the CAFC seems to fundamentally misunderstand the basics of several patent law matters. Which is regrettable.

From the Wiki entry for Information Age:The Information Age (also known as the Computer Age, Digital Age, or New Media Age) is a period in human history characterized by the shift from traditional industry that the industrial revolution brought through industrialization, to an economy based on information computerization. The onset of the Information Age is associated with the Digital Revolution, just as the Industrial Revolution marked the onset of the Industrial Age.

In my best Bill Lumberg voice, “yeah … ummm … we should deny patent protection to the prime driver of our economy.” Just f’n brilliant.

It seems to work everywhere else. Or are they not in the information age too?
Never had a good grasp of the facts, do you? Check out the following list of largest software companies: link to en.wikipedia.org

8 of the 10 are from the USA (including 8 of the top 9).

The following is a list of the largest internet companies:link to en.wikipedia.org
7 out of the 10 are from the USA. 2 are from China, and one is from Japan.

Isn’t the important question whether these USA companies, these global champions, would be where they are today if, during their start-up days, the patent law of the USA had been working as it has been working in the last few years. As I understand it, they all grew to much their present size before the troll era began.

Meanwhile, on your logic, we are all getting heart disease because we speak English. The facts are beyond dispute.

As I understand it, they all grew to much their present size before the troll era began.
We are talking about eligibility under 35 USC 101 — not the troll issue. How does this confuse you? You may apparently speak English, but your comprehension skills are lacking.

Meanwhile, on your logic …
Do you want to put forth a better explanation? Patents foster investment, which in turn fosters innovation. Increased investment = increased innovation. You call yourself someone experienced in intellectual property law yet I have to explain this to you? You need serious help.

Patents foster Investment? Well, some of the time, yes. But when an FTO opinion flags up a thicket of patents, it is a brave Investor that goes ahead anyway. In such circumstances, patents deter Investment. Less Investment = less Innovation.

Don’t tell me that nobody does FTO and therefore nobody is deterred. In a properly functioning patent system, people do FTO. Patents stimulate Innovation best when Innovators have to design around. That’s called Promoting the Progress.

But when an FTO opinion flags up a thicket of patents, it is a brave Investor that goes ahead anyway
We live in a world where there is a thicket of patents no matter where you go. Investors look to see whether or not you can create value, and if you can, can you protect it. If you can provide value (and protect it), the thicket of patents can be overcome.

Don’t tell me that nobody does FTO and therefore nobody is deterred
They are rare from my experience. Most patent holders (who assert) are looking for reasonable licenses.

Patents stimulate Innovation best when Innovators have to design around. That’s called Promoting the Progress.
That is one way. However, when patents become so weak that there is no need to design around.

So the test for eligibility is “what sells”?
Nobody pays money for “abstract ideas.”

Are you doing that computer-implemented technology cannot be claimed as a process, a machine, or an improvement thereof? Assuming that they can be claimed in this manner (which they are), then the next question is whether or not they are directed to abstract ideas.

What does Google and Facebook make?
You fail to appreciate that patent law protects both products (e.g., machines) as well as processes. Google and Facebook provide the results of the processes they practice.

What do you offer that is concrete for which you get paid?
Attorneys offer their services … what they do. What people do can be described as a process, which is protectable under the law (assuming that it is novel and nonobvious)

The harsh reality is that there are very few things that are made today that don’t rely on abstraction, in the truest form
Relying on an abstraction is not the same as being directed to an abstraction. As such, your point is … well … pointless.

The prime driver of the economy of the USA is Shopping. You want patents on Shopping? Is that wise?
Wow … so incredibly ignorant. Shopping today is an ENTIRELY DIFFERENT experience than it was 40 years ago — much of that is based upon the internet and/or computers.

What difference does it make to growth in the US economy, whether people spend their money in malls or on the net.
In 5 minutes I can identify a problem, find a product to solve the product, purchase the product and have it sent to my door in 2 days with extreme ease. The number of products available in such a manner numbers hundreds of thousands if not millions.

Try to appreciate how this changes EVERYTHING. Jeff Bezos did and he is worth $30B.

Because nobody ever sat at home and purchased stuff for delivered before the computer.
Oh yes … you would wait a year for next year’s seed catalog. If you were lucky, there was a phone number you would call. Otherwise, you might have to fill out a form and send it in. Of course, you would hope that they have the products in stock and your knowledge of the product would be limited to what was described in the catalog. Paying would involve sending a check. You would have no idea when it was shipped. God forbid if you changed your mind and wanted 2 packets of watermelon instead of 1 packet. If you forgot what you ordered last year, well, you are out of luck. If you wanted to compare the prices to a competitor, well … I hope you had the catalog of the competitor pre-ordered. Did you want it shipped on a particular day? Too bad. I could go on and on and on and on.

You antis are truly amazing. Your jealously of the wealth accrued by the titans of software and the internet palatable.

No software investors make investments depending on either protection from competition via patent or future assertion of patented methods.

The vastest array of patent litigation ever assembled in the biggest market every contested by patent (i.e. the smartphone wars) have resulted in virtually no results for any involved player, good or bad, despite billions expended.

The pure impotence of the patent system in dealing with software, which cannot ever fit the patent model, is only matched by the damage the system has done to its legitimacy by trying to jam the square peg of software into the round hole of physical invention.

And never you mind the impressive economic damage done to many innocent parties in that pursuit. People who would innovate and hire more if not under irrational attack do to your too widely shared misconception.

Where is the fallacy of logic (even if you can come up with an investor here and there that doesn’t fall within Martin’s hyperbole)? It could be that the occasional exceptional investor “proves” his hyperbolically expressed rule couldn’t it?

Oh no, the entire problem is NOT contained in software patents. Clearance of other products can turn into a joke too, where the unknown is not if a product infringes a claim of an issued patent, but how much the clearance will cost in legal opinions. And also, how many of ridiculously broad patents have been granted by examiner X (the same names pop up over and over again).

So then, perhaps the problem lies not within the patent system, but the competency of the practitioners, examiners and judges. Perhaps it is they who should be held responsible for the claims that they draft, and the patent system should provide inventors and assignees with compensation for defective work.

If other licensed professionals are held responsible for defective or shoddy work, why shouldn’t patent professionals be held to the same standard? Why shouldn’t inventors and assignees be entitled to compensation for legal costs, lost business opportunities, other costs if an issued patent was subsequently deemed invalid. Shouldn’t the experts have known that the claims they drafted were fundamentally flawed?

If other licensed professionals are held responsible for defective or shoddy work, why shouldn’t patent professionals be held to the same standard?
Its called malpractice … and lawyers get sued all the time.

Shouldn’t the experts have known that the claims they drafted were fundamentally flawed?
Is it malpractice to draft claims that have been acceptable for decades and have the Supreme Court change the law based upon a statute that hasn’t changed?

What myself (and others) have been asking from the Supreme Court is some tangible guidance as to what they consider an abstract idea (the abstract idea exception is judicially created so they have to explain it). In CLS Bank, the Supreme Court refused to give us that guidance.

That is fine, I can handle a remark.
The responsibility of finding the most relevant prior art could be shared. For example, inventors could help looking for the prior art in the form of commercial products -there are a lot of innovators that are “doers” and do not care filing a patent before launching a product. Practitioners could help ranking the citations in IDS by order of relevance. There is also the crowd sourcing initiative from the PTO.
I am convinced that with good prior art, the patents would be much better in the first place. Sometimes, you just need to look at what is cited in foreign cases, so there is room for improvement.
My modest experience is that the recent changes in 101 and 103 jurisprudence are not the main problem.

inventors could help looking for the prior art in the form of commercial products
Inventors are problem solvers — not experts in searching. Examiners, however, are paid to be experts in searching.

Practitioners could help ranking the citations in IDS by order of relevance
Ask 100 baseball writers for their ranked list of 20 best baseball players and you’ll likely get 100 different lists. What is relevant to one is not relevant to another — not particularly helpful.

I am convinced that with good prior art, the patents would be much better in the first place
I agree. However, Examiner are trained and paid to be experts in the prior art — that is where the responsibility for finding the prior art should be placed.

From a policy point or view: You should draw a line somewhere.
Why must the line be drawn?

But purely as tests–the EPO and China tests are so much more straightforward / manageable / able-to-be-predictably-applied than the absolute nonsense/mess of a test that we have now in the US.
Ease of use is not the prime driver for the US patent system.

So, You say that the SCOTUS is re-writing the Statute, and that it can’t do. Meanwhile, I’m saying theSCOTUS is telling us what the Statute means, that it is doing no more than the job it is set up to do.

This “recant” thing you mention. Is that the whole “business method” thing? If one particular claim that you can characterize as a “business method claim” is eligible then it necessarily follows that ALL business methods are eligible? If one animal with a tail is a tiger then all animals that have a tail must be tigers? Is that your point? Some “business method innovations” can be within the useful arts while others are not. I don’t see why that is so difficult for you to grasp.

Meanwhile, I still don’t understand your point that “technological” is:

“…an explicitly added word to 101″

I don’t yet see it there. So how can it be “explicit” there?

And anyway, why the fuss? Plenty of learned commentators have asserted for ever and a day that “useful arts” is synonymous with “technology” and always has been. That much is nothing new. It’s boring old hat. That those commentaries do find resonance within SCOTUS has become visible at last.

Commentators also point out that SCOTUS decides no more than the necessary, turning the tiller no more than needed, to keep the boat on a steady course. Personally, I find that comment convincing.

there is no test that can be consistently applied to patents to make this determination.

That’s because there’s fundamentally different classes of patent claims and no single “test” is going to apply in the exact same way to the patent claims at the margin of the absolute worst or the barely acceptable within any of the classes. In part that’s why we have different patent statutes: to help people focus on various issues with particular goals mind. The courts are presented with specific problems and they apply the statutes and explain their reasoning. As a result of this, and as a result of time passing and the types of claims being litigated changing over time and in response to the court cases, the law necessarily and inevitably evolves.

Patent law concerning a “new” technology should evolve as quickly as that technology evolves so that we are sure that we are rewarding the people who are developing the technology and not (1) speculators on what is going to become “widespread” or “demanded” only after it’s been gambled on; or (2) people who want to protect information itself, whether it’s limited to a certain conventional carrier or not. With respect to a pretty large portion of claims in the computer-implemented arts many people have zero confidence that (1) or (2) or both are being met by a large fraction of patents or pending applications. And until very recently it was pretty much the wild west for a long time. Face the basic fact: computers are old. Really, really old, from a patent prospective. Not quite as old as a ball point pen but way older than PacMan.

With respect to biotech, I’m pretty sure Prometheus put a giant permanent damper on (2), which is great and was a long time coming.

So you’re dissatisfied that you can’t easily evaluate every claim for eligibility based on the current case law. Okay. Then let someone who doesn’t find it so difficult help you do the analysis and you can modify the parts that you don’t like with some words of your own.

But it’s never going to be as simple as “use this word in your claim and you pass the eligibility test.” Never. Ever.

If you really believe that patent law should be rewritten such that people can protect, e.g., certain kinds of stored or transmitted information, with a patent claim then by all means step up and say so. Be bold, man! But if you don’t believe that, than you must recognize that people have tried and will continue to try to protect information and other ineligible subject matter with patent claims by futzing with the words in the claims. And a court is going to have to make the call. That’s what’s going on now.

Regardless of how difficult it is for you to understand how to apply the case law to claims you believe are at the the boundaries, you surely do understand that a claim to, e.g., a computer configured to store [useful non-obvious information] and display [useful non-obvious information] is ineligible subject matter, right? You don’t question that conclusion do you? Do you need to know whether I licensed that claim or not to determine whether it’s worthy of a patent? Is that your “test”?

Even if I live under a rock, and even if I haven’t heard of the exceptions, I do know that your Admission against Interest point is absurd in the context of a blog, and nothing more than wishful thinking.

I’m flattered, that you expect me to know this stuff. Why should I? I’m not a US attorney at law. Evidently, telling me about those exceptions is, for you, child’s play, the work of a moment. So go on, tell me.

MM: “That’s because there’s fundamentally different classes of patent claims and no single “test” is going to apply in the exact same way to the patent claims at the margin of the absolute worst or the barely acceptable within any of the classes.”

Rubbish. There are fundamental attributes common to all patent claims that enable an appropriate test to be formulated. I know, not only because this is intuitively obvious, but because I have described one in the past.

More specifically, the problem is that there is no test that can be consistently applied to patents to make this determination.

The CAFC had a test – actually, two – that the Supreme Court rejected in Bilski. The Supreme Court refused to articulate any test, and felt it wise to leave the question open-ended.

And four years later, the Supreme Court, not happy with the total inconsistency and havoc created by having no test, issued Alice, in which… well, in which the Court again refused to articulate any test.

Why the Court believes that any different “result” will arise from Alice, when it is a nearly carbon-copy opinion of its Bilski decision that really escalated the chaos in the first place, is an interesting question. The old saw applies here, that “the definition of insanity is doing the same thing repeatedly and expecting a different result.”

So THAT’S the problem: 35 USC 101 has become a smell test. Legal consistency requires objectivity, of the sort that is totally missing from the Supreme Court’s cases. This is such a simple principle of law that it’s baffling why nine legal scholars cannot see it and refuse to do anything about it.

So how does one “objectively” determine whether some information or some abstract labeling applied to an old (or undescribed) physical structure or information processing method deserves patent protection or not?

I have something in mind, and have had it for years. It works well, and is legally supported, and I have discussed it on this forum back when I used to care, which is now the biggest barrier: I just don’t care anymore, and have moved on from the Sisyphean patent law exercise. Life’s too short.

MM is just bizarre. He is shameless and pushes his message in anyway he can. Reality means nothing to MM. Just bizarre that he spends so much time doing this. I just can’t image why someone would do this without being paid.

Malcolm claims that he is a patent attorney – and if so, then he persistently and routinely violates the ethical rules as listed in the ABA model rules of professional conduct (specifically Rule 8.4) with his active advocacy on this modern social media which purposefully misrepresents material law, material facts and dishonestly treats what others post.

He certainly shows a complete indifference to his legal obligations (and yes, those obligations exist outside of the courtroom).

Or course, he may fully NOT be a practicing or licensed attorney. Prof. Crouch most likely knows. And in a related line of thought, I suspect that the ge + ne filter is maintained because Prof. Crouch does not want to test out the ability to not supply that identity if he did not at least take some nominal action to dissuade Malcolm from his odd and obsessive attacks on someone that does not even post here.

My comment Milly was merely a statement of fact. I have said before that I don’t think it would be a good idea. I think the boundaries of this blog should be decided by Dennis. Period. Any remedy I would seek would be via Dennis nothing outside this blog.